News & Analysis as of

United States Patent and Trademark Office Inter Partes Review (IPR) Proceeding

The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.... more +
The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.    less -
Morgan Lewis

USPTO Tightens Limits on AAPA Use in IPRs Following Qualcomm Precedent

Morgan Lewis on

A recent memo from the acting director of the US Patent and Trademark Office directs the Patent Trial and Appeal Board (PTAB) to reject inter partes review (IPR) petitions that use “applicant admitted prior art (AAPA), expert...more

WilmerHale

PTAB/USPTO Update - September 2025

WilmerHale on

On August 28, President Trump nullified via executive order the USPTO’s December 2024 Collective Bargaining Agreement (CBA), which covers approximately 9,000 patent examiners and other professionals at the USPTO....more

Knobbe Martens

[Webinar] Dodging Denial: Winning Strategies for PTAB Petitions Post-Fintiv - September 18th, 12:00 pm - 1:00 pm PT

Knobbe Martens on

Join Knobbe Martens partners Christy Lea and Ted Cannon for a strategic deep dive into the evolving PTAB landscape. With discretionary denials on the rise following the USPTO’s March 24 guidance, this session will equip...more

Jones Day

Acting Director Reverses Previous Discretionary Denial

Jones Day on

For the first time under the bifurcated institution procedures, the Acting Director reversed her own prior discretionary denial, citing changed circumstances based on a settlement in the parallel district court litigation. ...more

Mintz - Intellectual Property Viewpoints

The PTAB Pendulum Swings: How IPR Denials are Reshaping Patent Owner and Challenger Strategies

Post-grant proceedings at the Patent Trial and Appeal Board (PTAB) are undergoing sweeping transformation. Over the past year, as other federal agencies have grown cautious to avoid further budget constraints and downsizing,...more

McCarter & English, LLP

Navigating the Landscape of Patent Challenges at the USPTO

Challengers striving to beat higher-ranked opponents at the US Open tennis tournament happening now in New York are not the only challengers facing tricky new situations. Parties wishing to challenge the validity of US...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

U.S. IP Update – August 2025

Sterne Kessler’s U.S. IP Update is a newsletter delivering the latest developments in U.S. intellectual property law, tailored for companies and legal counsel in Korea. Stay informed on key court decisions, policy changes,...more

Quinn Emanuel

Patent Trial and Appeal Board Issues New Guidance Regarding Use of "General Knowledge" in IPR Petitions

Quinn Emanuel on

On July 31st, the Patent Trial and Appeal Board ("PTAB") issued a three-page memorandum stating that it will “enforce and no longer waive the requirement of 37 C.F.R. § 42.104(b)(4).”...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Issues First Decision on Litigated AIA Derivation Proceeding

In Global Health Solutions LLC v. Selner, the Federal Circuit addressed for the first time an appeal from a derivation proceeding litigated before the Patent Trial and Appeal Board (PTAB) under the America Invents Act (AIA)....more

McDonnell Boehnen Hulbert & Berghoff LLP

DexCom, Inc. v. Stewart (Fed. Cir. 2025)

The Federal Circuit affirmed a decision by the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) in an inter partes review prompted by an infringement allegation in DexCom, Inc. v....more

Goodwin

PTAB Discretionarily Denies Two Petitions, Refers a Third to the Board in Amgen v. Bristol-Myers Squibb

Goodwin on

On July 24, 2025, Acting Director of the USPTO, Coke Morgan Stewart, denied institution of inter partes review in IPR2025-00601 and IPR2025-00602, but referred the petition in IPR2025-00603 to the Board in Amgen Inc. v....more

Rothwell, Figg, Ernst & Manbeck, P.C.

“At Your Discretion” — Discretionary Denials Increase as PTAB Issues Institution Decisions

The first half of 2025 has brought many changes at the United States Patent and Trademark Office (“USPTO”), including policy changes at the Patent Trial and Appeal Board (“PTAB”). At the end of March 2025, the issuance of the...more

King & Spalding

USPTO Acting Director Stewart Limits Use of General Knowledge in IPR Petitions

King & Spalding on

On July 31, 2025, Acting USPTO Director Coke Morgan Stewart released a memo instructing the agency “that applicant admitted prior art (AAPA), expert testimony, common sense, and other evidence that is not ‘prior art...more

Fenwick & West LLP

Navigating the PTAB’s New Discretionary Denial Landscape: Strategic Shifts for Patent Challenges

Fenwick & West LLP on

The Patent Trial and Appeal Board (PTAB) has undergone significant changes in how it evaluates patent challenges, creating both opportunities and obstacles for technology and life sciences companies....more

Jones Day

Cancellation of Claims Deemed An Inappropriate Sanction

Jones Day on

USPTO Acting Director Stewart sua sponte reconsidered and modified a previous Director Review decision that had affirmed cancellation of all 183 challenged claims as a sanction against patent owner Longhorn Vaccines. ...more

McDermott Will & Schulte

Use of general knowledge in IPR petitions will no longer work

On July 31, 2025, the US Patent & Trademark Office (PTO) issued a memo clarifying the requirements under 37 C.F.R. § 42.104(b)(4) for inter partes review (IPR) petitions. The memo emphasizes that petitioners must clearly...more

McCarter & English, LLP

New Patent Office Guidance Raises Bar for IPR Petitioners

The Patent Office recently announced that it will begin enforcing a rule that requires that inter partes review (IPR) petitions “specify where each element of the claim is found in the prior art patents or printed...more

Jones Day

Two Week Deadline for PTAB to Issue Notice of Filing Date Accorded

Jones Day on

On July 18, 2025, Scott R. Boalick, Chief Administrative Patent Judge for the Patent Trials and Appeals Board (“PTAB”), announced that, absent good cause, the PTAB will issue a Notice of Filing Date Accorded within 14 days...more

McDonnell Boehnen Hulbert & Berghoff LLP

IPR Discretionary Denial Rates at the PTAB: The New Normal

Inter partes review (IPR) proceedings are a cost-effective way by which patent challengers can dispute the validity of an issued patent. To institute an IPR, the Patent Trial and Appeal Board (PTAB) must determine that the...more

McDonnell Boehnen Hulbert & Berghoff LLP

American Science and Engineering, Inc. v. Stewart (Fed. Cir. 2025)

Under Dickinson v. Zurko courts (specifically, the Federal Circuit) should defer to factual determinations by administrative agencies like the U.S. Patent and Trademark Office unless they are not supported by substantial...more

ArentFox Schiff

USPTO Restricts Use of AAPA and Other General Knowledge Evidence in IPR Proceedings

ArentFox Schiff on

On July 31, the US Patent and Trademark Office (USPTO) issued a new memorandum announcing that it will begin enforcing 37 C.F.R. § 42.104(b)(4) that requires petitioners in inter partes review (IPR) proceeding to “specify...more

Jones Day

Subsequent Challenge Does Not Justify Discretionary Denial

Jones Day on

In a recent decision, Acting Director Coke Morgan Stewart denied a Patent Owner’s request for discretionary denial in LifeVac, LLC v. DCSTAR, Inc., IPR2025-00454. Even though Petitioner had previously challenged the same...more

Rothwell, Figg, Ernst & Manbeck, P.C.

July USPTO Guidance Sets Stricter Standards for Evidence in IPR Petitions

Acting Director of the USPTO, Coke Morgan Stewart, issued a memorandum last week that will change the way petitioners levy challenges to patents via inter partes review (IPR). The change will apply to any petition for IPR...more

Jones Day

Acting Director Clarifies Multi-Petition Policy for Competing Constructions

Jones Day on

On June 25, 2025, Acting Director Coke Stewart released an informative decision vacating institution of inter partes review (“IPR”) based on two petitions that were primarily filed to present two different constructions....more

Akin Gump Strauss Hauer & Feld LLP

USPTO Director: Board Abused Discretion by Instituting Two IPRs on Same Patent Based on Competing Claim Constructions

In a recent decision designated as Informative, the USPTO Director determined that the Patent Trial and Appeal Board abused its discretion by instituting two inter partes review proceedings challenging the same patent, based...more

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